• Nokia Of America Corporation v. Blackberry Ltd.Rehearing denied
  PTAB · Oct 19, 2018 · IPR2018-00583 · APJ Aaron W Moore · IPR · Rehearing

  The Board denied Nokia’s rehearing request, leaving institution denied for claims 5–17 because Cherian did not disclose the claimed antenna configuration information for the second or third component carrier.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Because Petitioner has not shown that we abused our discretion in denying institution, the Request for Rehearing is denied. 1 37 C.F.R. § 42.108(c) provides that “a genuine issue of material fact created by . . . testimonial evidence will be viewed in the light most favorable to the petitioner . . . for purposes of deciding whether to institute an inter partes review.” This does not require that we institute whenever there is conflicting testimony, or that every fact issue be resolved in the petitioner’s favor. We only need view the issue in the light most favorable to the petitioner. We did so here.” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “. . . to ‘the number of Nxcarriers,’ constituting the number of data traffic channels” and that “[e]ach different channel . . . requires . . . a separate antenna port.” Ex. 1008 ¶ 85. This means that the NxParamsCount field would reflect the number of antennas/ports used for all data channels, not “antenna configuration for the second component carrier,” as recited in claims 1 and 14, or “antenna configuration for the third component carrier,” as recited in claim 14. For example, if there were four data channels, the NxParamsCount field would be set to four, even though, according to Dr. Min, the “second component carrier” and “third component carrier” would each have only one antenna. There is no genuine issue of fact warranting institution because we find Petitioner’s evidence insufficient even if we accept it as true.1 IV. CONCLUSION We denied institution because we found Petitioner failed to show how Cherian’s NxParamsCount value discloses “antenna configuration information”––including a number of ports/antennas––for “the second component carrier” or the “third component carrier.” Further review of the Petition and the Min Declaration, in light of Petitioner’s Rehearing Request, does not lead us to a different conclusion.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that Cherian does not disclose each and every element arranged as recited in the claim, as required for anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that” slip op. at 3

  Claim construction§ 102 anticipation
  Patents in suitUS 9,253,772
• Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentable
  PTAB · Jun 5, 2018 · IPR2017-00321 · APJ James B Arpin · IPR · Final written decision

  Claims 14–21 are unpatentable as obvious; the Board denied the contingent motion to amend substitute claims 22–29.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “review of claims 14–21 (“the challenged claims”) of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311– 319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes review as to the challenged claims.2 Paper 11 (“Inst. Dec.”). Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition (IPR2017-01556, Paper 2), accompanied by a Motion for Joinder (IPR2017-01556, Paper 3), challenging claims 14–21 of the ’941 patent, and we granted the Motion for Joinder and instituted review of the challenged claims based on the corresponding Petition (IPR2017-01556, Paper 9).” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;5 and (4), when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.6 Graham v. 5 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 11; see Ex. 1003 ¶ 54. Petitioner’s declarant, Dr. Sarrafzadeh, and Patent Owner’s declarant, Dr. Pollonini, exceeds this assessed level. Ex. 1004; Ex. 2010 ¶¶ 6–11. Patent Owner does not contest Petitioner’s assessment or propose an alternative assessment. See MTA 11. To the extent necessary, we adopt Petitioner’s assessment. 6 In the instituted proceeding, Patent Owner does not raise arguments or present evidence based on the presence of such objective evidence of nonobviousness. See In re Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012) (“The party seeking the patent bears the burden to overcome the prima facie case of obviousness with evidence of secondary considerations, such as commercial success.”); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00087, 2015 WL 1546574, at *11 (PTAB 2015) (“Although it is Patent Owner's burden to introduce evidence supporting such objective indicia, see In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), the ultimate burden of persuasion never shifts to Patent Owner, see 35 U.S.C. § 316(e).”), aff’d, In re Nuvasive, Inc., 689 Fed. Appx. 954 (Fed. Cir. 2017); but see Prelim. Resp. 4–6. Therefore, this factor does not play into our analysis of Petitioner’s challenges to any claim on any ground. John Deere Co., 383 U.S. 1, 17–18 (1966). Nevertheless, the Supreme Court cautions us against “the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “6. “PPG sensor” (claims 14–21) In the Institution Decision, we adopted Patent Owner’s proposed construction of the term “PPG sensor” as the broadest reasonable interpretation of the term. Id. at 10–11. In the Patent Owner Response, Patent Owner proposes a slight modification to this interpretation (PO Resp. 9), to which Petitioner does not object (see Reply 1–4). Patent Owner now contends that the broadest reasonable interpretation of the term “PPG sensor” is “an optical sensor which obtains a plethysmogram that results from blood flow modulations caused by the subject’s heartbeat.” PO Resp. 9 (emphasis added); see Ex. 2005, 1. We agree that the term should include express reference to “an optical sensor,” rather than merely to “an optically obtained plethysmogram.” Inst. Dec. 10; see Ex. 1001, 1:64–2:6. We determine that our previous construction, as modified by Patent Owner, is the broadest reasonable interpretation of this term.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “have had reason to combine the teachings of Kosuda and Maekawa in the manner proffered by Petitioner. Initially, we note that although Patent Owner has suggested an alternative solution to the signal-to-noise problem, neither Patent Owner nor its declarant provides support for their contention that the alternative solution is superior to that taught by the combination of the teachings of Kosuda and Maekawa. See PO Resp. 24; Ex. 2010 ¶ 90. But even if it had, as Petitioner notes, “the law does not require that a particular combination be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the claimed invention.” Reply 8; see In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“The question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” (emphasis added)). Thus, the existence of potentially superior alternatives does not negate the combination of teachings proposed by Petitioner. Accordingly, we are persuaded that Petitioner demonstrates sufficiently that a person of ordinary skill in the art would have had reason for combining the teachings of Kosuda and Maekawa to achieve the device recited in claim 14 of the ’941 patent.” slip op. at 29

  Patent outcomesUS 8,923,941 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,923,941
• Dali Wireless Inc. v. Commscope Technologies LLCRehearing denied
  PTAB · Jan 9, 2018 · IPR2017-01324 · APJ Terrence W Mcmillin · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution for claims 1–5 and 7–17 because the petition did not show the references taught the sample-rate limitation or provide adequate motivation to combine.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b). In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “With regard to the combination of Bellers and Farhan, in the Petition, Petitioner cited paragraphs 117–120 of the Bims Declaration (Ex. 1002) as providing support for combining the teachings of these references. Pet. 11. As discussed in the Decision Denying Institution, however, the cited paragraphs relate to different subject matter. DDI 14. In the Request for Rehearing, Petitioner now relies upon paragraphs 104–107 of the Bims Declaration. Req. Reh’g 14. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. With regard to the combination of the teachings of Ichiyoshi and Farhan, in the Petition, Petitioner cited paragraph 254 of the Bims Declaration. Pet. 12. As discussed in the Decision Denying Institution, the cited paragraph relates to different subject matter. DDI 15. In the Request for Rehearing, Petitioner now relies upon paragraphs 255–258 of the Bims Declaration. Req. Reh’g 9. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. As noted above, we could not overlook or misapprehend arguments that Petitioner did not make or evidence upon which it did not rely. Thus, contrary to Petitioner’s assertion, we did not overlook argument or evidence presented in the Petition relating to motivation to combine. Moreover, we have reconsidered Petitioner’s reasons to combine for the combinations of (1) Bellers and Farhan; and (2) Ichiyoshi and Farhan provided in the Petition (Pet. 11–12) in light of the additional citations provided in the Request for Rehearing and find, as we did in the Decision Denying Institution (Dec. 13–15) that Petitioner has failed to show a reasonable likelihood of establishing a reason to combine the relevant teachings of these references. As we indicated in the Decision Denying Institution (id.), the reasons to combine in the Petition for all of the asserted combinations of references were brief and conclusory. With regard to the combination of Bellers and Farhan, the Petition states, “[i]t was commonly understood that flexible ADCs could have a sampling rate adapted to the associated bandwidth of their analog input signal.” Pet. 11 (emphasis added). With regard to the combination of Ichiyoshi and Farhan, the Petition states, “POSITAS would have been motivated to combine Ichiyoshi’s sampling system with Farhan’s broadband communications system based on POSITA’s commonly understood knowledge that optimizing RF signal sampling rates can further improve bandwidth efficiency.” Pet. 12 (emphasis added). Neither the Petition nor the Bims Declaration provide adequate support for the assertions as to what was “commonly understood” by persons of skill in the art. The only support given in the Bims Declaration for these assertions are quotations from the art cited in the Petition (see Ex. 1002, ¶¶ 104, 255), which fall far short of establishing what was “commonly understood” as of the date of filing the” slip op. at 10

  • BurdenNot shown unpatentable

    “2. Bellers (Ex. 1006)3 Petitioner argues Bellers teaches “selecting the sample rate based on bandwidth.” Req. Reh’g 9–13. As noted by Petitioner (id. at 10–11), Bellers states: “[r]eceiver 101 includes a sampling mechanism 104 which samples the analog video input signal at a frequency modulated by or dependent upon the spatial frequency of the sampled content” (Ex. 1006, 3:11–14) and “[t]he present invention employs a sampling rate which is modulated based upon the spatial frequencies of the content being sampled. Higher sampling rates, and larger sample densities, are employed for content having high spatial frequencies while lower sampling rates are employed for content having low spatial frequencies” (id. at 4:14–19 (emphasis added)). Bellers expressly defines spatial frequencies, as follows: “[t]he spatial frequency or frequencies of an image are the rates of pixel change per unit distance, usually expressed in cycles per degree or radian.” Id. at 1:11–13. Thus, Bellers teaches modulating the sampling rate based on the rates of pixel change per unit distance. Petitioner has not shown that Bellers teaches or suggests a “sample rate selected based on the bandwidth.” Petitioner has not directed our attention, either in the Petition or the Request for Rehearing, 3 U.S. Patent No. 8,446,530 B2. to teachings or suggestions in Bellers of selecting the sample rate based on the bandwidth. 3. Ichiyoshi (Ex. 1009)4 In both the Petition (Pet. 83, 86, 90, 95–96) and the Request for Rehearing (Req. Reh’g 7–8), Petitioner argues the following passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. The sampling frequency fs is normally set to fs = NΔf where Δf represents a channel frequency interval. The sampling frequency fs is generated independently in the transmission device 81 and the reception device 82. Ex. 1009, 6:3–6. . . . signal combining circuit 91 includes a sampling timing generator 1 for generating a signal of the sampling frequency fs, and N A/D converter 3 for sampling N independent information signals with the sampling frequency fs . . . Id. at 6:9–13. These passages, however, do not relate to selecting the sample rate based on bandwidth. Petitioner provides no adequate explanation or other support in the Petition (Pet. 83) or the Request for Rehearing (Req. Reh’g 7– 8) for concluding these passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. Indeed, in the Petition, the Petitioner quoted these two passages, but failed to provide any explanation or to cite any further support for finding Ichiyoshi taught or suggested selecting the sample rate based on bandwidth. See Pet. 83. B. Reason to Combine” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,848,747
• Facebook, Inc. v. Sound View Innovations, LLCRehearing denied
  PTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing

  The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6

  • BurdenDecided for patent owner

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11

  Claim construction
  Patents in suitUS 6,125,371
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.All claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00320 · APJ Karl D Easthom · IPR · Final written decision

  Claims 8–10 are unpatentable: claim 8 as obvious over Seligson and Bucklen, or Seligson, Yonemaru, and Bucklen; claims 9–10 as obvious over Seligson and Yonemaru.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “This court has repeatedly emphasized that an indefinite article “a” or “an” in patent parlance carries the meaning of “one or more” in open-ended claims containing the transitional phrase “comprising.” See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 . . . (Fed. Cir.1999); Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 . . . (Fed. Cir.1997); North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1575–76 . . . Fed. Cir.1993); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting 531 (3d ed. 1990). Unless the claim is specific as to the number of elements, the article “a” receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article. See Abtox, 122 F.3d at 1023 . . . . Under this conventional rule, the claim limitation “a,” without more, requires at least one. . . . . Moreover, standing alone, a disclosure of a preferred or exemplary embodiment encompassing a singular element does not disclaim a plural embodiment. “[A]lthough the specifications may well indicate that certain embodiments are preferred, particular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.” Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 . . . (Fed. Cir. 1994). Thus, as the rule dictates, when the claim language or context calls for further inquiry, this court consults the written description for a clear intent to limit the invention to a singular embodiment. Id. (emphasis added). Claim 9 does not recite “selecting a [single] row.” Accordingly, in line with the “conventional rule,” “selecting a row” means “selecting at least one row.” See KCJ Corp., 223 F.3d at 1356. KCJ Corp. also shows that absent a clear disclaimer (or lexicographic definition), Patent Owner’s argument that “the embodiments disclosed in the ‘503 Patent . . . select[ ] . . . a single row of reference cells” fails to support Patent Owner’s narrow reading of claim 9. See PO Resp. 27; 223 F.3d at 1356.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Under this standard, absent any special definitions, claim terms or phrases carry their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Most of the claim terms do not require express construction because they do not raise a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy” and noting that “the stage at which the claims are construed may vary with the issues, their complexity, the potentially dispositive nature of the construction, and other considerations of the particular case”).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “rows). Therefore, Petitioner shows persuasively that the combination suggests the disputed claim 9 limitation under the adopted claim construction––a row decoder selecting at least one row of reference cells (transistors in Seligson) that have the analog signal applied thereto––in order to save converter space and to convert different analog ranges into digital signals based on the row arrangement in a predictable fashion. See Pet. 28– 29, 37–39, 49–54. Moreover, Petitioner shows that the combination renders claims 9 and 10 unpatentable for obviousness under both Patent Owner’s and Petitioner’s proposed claim constructions. Seligson’s transistors include reference voltages and inputs, which function similarly to the reference resistors and inputs in Yonemaru, and Yonemaru discloses select switches ultimately to provide different selected rows of voltage references for comparisons. See Ex. 1005, Fig. 4; Ex. 1006, Fig. 1; Inst. Dec. 23; Ex. 1030 ¶¶ 27–31. Petitioner explains that Yonemaru’s “SW switches select rows within the resistor array depending on the value of the upper bits, i.e., depending on the range of the analog signal.” Pet. 38 (citing Ex. 1006, 5:52–6:37); see also Pet. 53–54 (similar showing). Petitioner shows persuasively that modifying Yonemaru’s decoder and select switches to select at least one row of programmable reference transistors in Seligson’s circuit to attach an input voltage to a row would have been obvious for the purpose of sensing different analog ranges, while providing a known array configuration for utilizing available chip space. See Pet. 28–29, 37–39, 49–54.9” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundUnpatentable

    “Regarding this prior art pulse counter, Bucklen states that “the desired digital output can be obtained as the sum of the individual comparator outputs.” Ex. 1007, 1:27–28. Nevertheless, as Patent Owner points out, Bucklen also states that using such an “adder . . . is not a simple matter . . . and virtually all higher-resolution parallel analog-to-digital converters built today rely on the detection of a single transition” method. Id. at 1:33–38 (emphases added). But, as Petitioner persuasively argues, describing the known, single pulse count method as “not a simple matter” and describing better “higher-resolution” alternatives for parallel converters does not amount to teaching away. See Pet. Reply 25–26 (stating just because “better alternatives” may exist in the prior art “does not mean that an inferior combination is inapt for obviousness purposes” (quoting In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)). “A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1383 (Fed. Cir. 2017) (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013))) (also reasoning “Finseth does not say or imply that text descriptions are ‘unreliable,’ ‘misleading,’ ‘wrong, or ‘inaccurate,’ which might lead one of ordinary skill in the art to discard text descriptions completely”). The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 50

  Patent outcomesUS 6,169,503 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,169,503
• HTC Corporation / HTC America, Inc. v. Parthenon Unified Memory Architecture LLCAll claims unpatentable
  PTAB · Jan 4, 2017 · IPR2015-01501 · APJ James B Arpin · IPR · Final written decision

  Claims 1–4 are unpatentable under § 103 as obvious over Bowes and MPEG, with Stearns for claim 3 and Shanley for claim 4.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Pet. vi–vii. Patent Owner filed a Preliminary Response (Paper 7). On January 6, 2016, we issued an Institution Decision (Paper 12, “Inst. Dec.”), instituting inter partes review on the following grounds: References Basis Claim(s) challenged Bowes and MPEG 35 U.S.C. § 103(a) 1 and 2 Bowes, MPEG, and Stearns 35 U.S.C. § 103(a) 3 Bowes, MPEG, and Shanley 35 U.S.C. § 103(a) 4” slip op. at 3

  • RehearingRehearing, deniedDenied

    “After institution, Petitioner filed a Request for Rehearing (Paper 14), which we denied (Paper 17), seeking reconsideration of our denial of institution of review with respect to claims 7–10 and 12. Patent Owner then filed a Patent Owner Response to the Petition (Paper 21, “PO Resp.”), and Petitioner replied (Paper 32, “Reply”). A hearing for the instant proceeding and related Cases IPR2015-01500 and IPR2015-01502 was held on September 19, 2016. A transcript (Paper 52, “Tr.”) of that hearing is included in the record.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither Petitioner nor Patent Owner offers other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this Final Written Decision, no claim terms require express construction.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Petitioner proposes an assessment for a person of ordinary skill in the art. Pet. 11 (citing Ex. 1030 ¶¶ 78–81); see Ex. 2009 ¶ 24. Patent Owner’s declarant, Dr. Thornton, proposes an alternative assessment for a person of ordinary skill in the art. Ex. 2009 ¶ 25. Nevertheless, Dr. Thornton testifies that “my analysis and conclusions would remain unchanged” regardless of which assessment is applied. Id. ¶ 26; see Tr. 40:8–42:11, 76:20–77:9. To the extent necessary and for purposes of this Final Written Decision, we adopt Petitioner’s assessment, which each party’s declarant meets or exceeds. See Ex. 1030 ¶¶ 2–6; Ex. 2009 ¶¶ 5–11. 4 Patent Owner does not contend in the Patent Owner Response that such secondary considerations are present. See Paper 13, 6 (“Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 5 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 10

  Patent outcomesUS 7,777,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,777,753
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution denied
  PTAB · Jun 13, 2016 · IPR2016-00324 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution for claims 1, 2, 4, 5, 9–11, and 15–17 because it could not determine the scope of two module limitations needed to assess the obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “If the scope and meaning of the claims cannot be determined without speculation, the differences between the challenged claims and the prior art cannot be ascertained. BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner’s contention that 35 U.S.C. § 112 ¶ 6 governs the term “error correction module” is persuasive. Contrary to Patent Owner’s arguments, nothing in the claims or the ’212 patent Specification indicates that a skilled artisan would recognize “error correction” or “error correction module” as a name for structure. See Rodriguez, slip op. at 22–23. The term “error correction” signifies the function of correcting errors, as performed by some type of hardware or algorithm working with a special computer processor. See Ex. 1001, 10:34–38, 10:62–11:5 (briefly describing functionality involving flexible error correction codes depending on the host’s capability and the NAND memory device’s reliability). The ’212 patent Specification also indicates that the claimed controller and ECC module applies to “future . . . NAND devices . . . expected to be less reliable than current . . . devices and to require a much stronger ECC capability.” Ex. 1001, 6:57–59; see also id. at 7:30–39 (describing “ongoing need . . . [to] provide compatibility between a host device . . . and successive generations of NAND flash memory devices”). According further to the Specification, the acronym “ECC” stands for “Error Correction Codes”––– indicating that error correction requires some type of coding (via ECC module 132). See Ex. 1001, 4:61–63; Fig. 5A.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “II. ANALYSIS A. Patent Owner’s 35 U.S.C. § 325(d) Arguments Patent Owner argues that the Petition should be denied under 35 U.S.C. § 325(d), because the Examiner previously considered Sakaue during prosecution as evidenced by an Information Disclosure Statement and a “List of References Cited by Applicant and Considered by Examiner.” See Prelim. Resp. 23–24. Although 35 U.S.C. § 325(d) permits the Board to reject a petition because the same or substantially the same prior art or arguments were considered previously in another proceeding before the Office, it does not require the Board to do so. We decline to reject the Petition merely because the Examiner previously considered Sakaue. The record here presents detailed arguments and evidence related to the scope of the challenged claims, and with respect to Sakaue, not before the Examiner, and we decline to institute for other reasons as discussed below. See Pet. 4– 9, 17–19, 23–60.” slip op. at 6

  Claim constructionDiscretionary denialcites Graham
  Patents in suitUS 7,886,212
• Symantec Corp. v. Finjan, Inc.Rehearing denied
  PTAB · May 23, 2016 · IPR2015-01892 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied Finjan’s rehearing request and left in place institution on the §103(a) ground over Swimmer for claims 1, 2, 5, 6, 10, 11, 14, and 15.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Patent Owner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “in view of Patent Owner’s Preliminary Response (Paper 7, “Prelim. Resp.”), that Petitioner had demonstrated in its Petition a reasonable likelihood of prevailing in showing the unpatentability of each of the challenged claims under 35 U.S.C. § 103(a) over Swimmer. Paper 9 (“Dec. on Inst.”), 12–23. Accordingly, we instituted an inter partes review on that ground. Id. at 34. We also concluded, however, that Petitioner had not established a reasonable likelihood that it would prevail on any of the other grounds asserted, and we declined to institute an inter partes review on any other ground. Id. at 23– 34.” slip op. at 3

  • BurdenDecided for petitioner

    “function number, arg ( ... [)],ret ( ... )>”)). “In other words, the audit system and/or emulator generates audit records for the Downloadables (i.e., Downloadable security profile data) that identifies and lists functions (i.e., operations) that the Downloadables attempt to invoke,” and “[s]ignificantly, these operations identified by Swimmer’s audit system are the very same types of operations referred to by the applications related to the ‘494 patent as examples of ‘suspicious operations.’” Pet. 17–18. We understand Swimmer’s “activity data,” which, as cited by Petitioner, are each contained within an audit record, to be “Downloadable security profile data,” in the parlance of claims 1 and 10 of the ’494 patent. Moreover, as Petitioner also contends, “Swimmer further discloses that these audit records are stored in a database.” Id. at 19 (emphasis added) (cited by Dec. on Inst. 17). Based on Petitioner’s arguments regarding the recited database limitations of claims 1 and 10, we understand Petitioner to equate the aggregate collection of Swimmer’s activity data/audit records, each recorded according to a structured schema, with the recited “database.” Id. at 13, 19–20 (citing Ex. 1005, 9, Fig. 3); see also Ex. 1005, 7 (disclosing “audit system . . . securely collects system activity data” (emphasis added)).5 Consequently, we do not understand Petitioner to have taken the position that “both ‘security profile data’ and ‘database’ should be redundantly the same” or to have “conflat[ed] the ‘security profile data’ itself with the ‘database’ that stores the ‘security profile data,’” as Patent Owner suggests. Req. Reh’g 5. 5 In the Institution Decision, we state that “[a]s explained by Swimmer, the audit record includes records collected by Swimmer’s VIDES system, organized with a specific ‘canonical format’ to serve the ASAX tool.” Dec. on Inst. 23. We are persuaded on this record that Swimmer’s collection of audit records, so organized, is a database.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “Swimmer, the activity data/audit records generated by the VIDES system are organized with a specific “canonical format” to serve the ASAX tool. Ex. 1005, 9–10. We are persuaded on this record that the collection of activity data, so organized, constitutes a database as that term is construed both in the Institution Decision and in the Sophos case as “a collection of interrelated data organized according to a database schema to serve one or more applications.” Dec. on Inst. 11; Case IPR2015-01022, slip op. at 10 (Paper 7). Although Petitioner argued for a different interpretation of “database” in its Petition (Pet. 10–12), we remain persuaded that the arguments and evidence cited in the Petition sufficiently demonstrate that Swimmer teaches a database according to the interpretation adopted by us (see id. at 19–20 (citing Ex. 1005, 1, 2, 9, Fig. 3; Ex. 1018 ¶¶ 108–110)). Moreover, we are satisfied, on the present record, that there is no meaningful distinction between “database schema,” as recited in our interpretation of “database” (Dec. on Inst. 11), and the “structured schema” or “particular schema” referred to in the Petition to describe Swimmer’s canonical format (Pet. 13, 19).” slip op. at 8

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,677,494
• Toshiba Corporation v. Optical Devices, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01443 · APJ Erica A Franklin · IPR · Final written decision

  Claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 are anticipated by Ando; the contingent motion to amend is denied for insufficient written-description support.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Patent Owner’s arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which defines the term. As the Federal Circuit has explained, [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we provide express constructions for only the following terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having either: (1) a Bachelor’s of Science Degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics technology, Photonics technology, or related technologies, either in industry, academia, or research, or (2) a Master’s degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics or Photonics. Pet. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added). Patent Owner asserts that one of ordinary skill in the art in 1967 would have “held a Bachelor of Science and Master of Science Degrees in either Physics or Electrical Engineering with a focus on optics, and additionally, at least two to three (2-3) years of experience in Physics or Electrical Engineering optics research.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 15

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Contrary to Patent Owner’s assertion, Dr. Leger’s declaration does not confirm that each of the proposed amendments find support in the ’186 application. To begin, the portion of Dr. Leger’s declaration cited by Patent Owner contains a conclusory opinion that is allegedly supported by disclosures in the ’186 application. Ex. 2104 ¶ 134. Dr. Leger, however, does not explain or otherwise justify why one of skill in the art would have understood from those cited portions of the ’186 application that the inventor possessed the claimed subject matter. Further, we agree with Petitioner that Dr. Leger’s testimony on cross-examination undermined his credibility with respect to written description support for the amended claim. In particular, we consider Dr. Leger’s cross-examination testimony regarding detecting radiant flux density and comparing radiant flux density that Petitioner listed:  Making a determination “by comparing the radiant flux density of the retroreflected radiant energy to that of a reference in the scanned area” as recited in claims 72, 74 and 83 requires measuring radiant flux density twice and comparing the measured values. ([Ex.]-1009 at 155:20-160:4.)  Measuring radiant flux density requires measuring radiant flux through a known area, and dividing the radiant flux by the known area. (Id. at 50:9-51:4.)  Without knowing the area (e.g. spot size hitting detector), radiant flux density cannot be measured or determined. (Id. at 53:21-54:1.)  Even if the beam completely fills the detector, a utilization” slip op. at 31

  Patent outcomesUS RE40,927 unpatentable
  Claim construction§ 102 anticipationcites Phillips · Graham
• Toshiba Corporation v. Optical Devices, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01439 · APJ Glenn J Perry · IPR · Final written decision

  Claims 48–53 are unpatentable as anticipated by Ando; the motion to amend with substitute claims 54–59 is denied for insufficient written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Optical Devices’ arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification. We give less weight to Optical Devices’ argument that all embodiments should be embraced by the construction. “‘[E]ach claim does not necessarily cover every feature disclosed in the specification. When the claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)). The ’913 patent includes description of a radar system embodiment with respect to Figures 13 and 14. Ex. 1001, 9:34–65. It is described that the radar system is detected by means of the “retroreflection principles” of the invention. However, the term “optical gain” is not used in connection with this embodiment. The term appears in the Specification only in connection with embodiments relying on what has traditionally been referred to as “optical.” WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002)3 (the adjective “optic” defined as “of or relating to vision or the eye” and the adjective “optical” defined as “relating to the science of optics” and “relating to vision”).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Optical Devices’ description of Ando, but not with Optical Devices’ conclusion. We do not read into the “detecting” step of claim 48 a requirement of detecting an optical gain. The ’913 patent invention lies in discerning a retroreflector from its background. The retroreflector provides a brighter spot than does its background because of the concentration of flux caused by the retroreflector that makes it appear brighter. However, that key feature is missing from claim 48. Claim 48 requires “receiving reflected radiation energy with an optical gain after retroreflection of the radiant energy.” However, the “detecting” step that follows simply requires detecting the reflected radiant energy after retroreflection to determine at least one characteristic of the object. Ando does indeed detect reflected radiant energy after retroreflection. It also determines at least one characteristic of the object, namely its contour. Ex. 1007 at Abstract. We “determine that there is no reasoned basis to read into the “detecting” step of claim 48 a requirement of detecting an optical gain. We, therefore, conclude that Ando meets the limitations of claim 48.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Dr. Hesselink opines that the additional limitations of the substitute claims are not taught by the ’913 patent. Ex. 1010 ¶¶ 36–37. We find his testimony to be persuasive. Further, under cross-examination in his deposition Dr. Leger testified that (1) the detectors described in the ’913 patent could not detect radiant flux density because they do not know the size of the spot hitting the detector (Ex. 1009, 50:9–51:4, 53:21–54:1) and measuring radiant flux density cannot be done with detectors that only measure radiant flux like those described in the ‘913 patent (Id. at 82:6–10, 85:18–86:6, 145:14– 146:4, 148:22–25) and (2) the ’913 patent does not describe a detector or utilization means that compares radiant flux density values to determine a change (Id. at 163:20–25, 164:20–24). 4. Conclusions Considering and weighing the priority document references, the” slip op. at 34

  Patent outcomesUS RE42,913 unpatentable
  Claim construction§ 102 anticipationcites Phillips · Graham

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.